The UDRP Blog™

In Steven Madden, Ltd. v. Domain Admin, Whois Privacy Corp. , WIPO Case No. D2018-2474 (Jane Seager, December 24, 2018), the Panel transferred the domain stevenmadden.com to the famous footwear, apparel, and accessories brand known as Steve Madden. Respondent, a Chinese individual, did not respond to the Complaint. Turning to the first of the three elements of a UDRP claim, the Panel found that the disputed domain was confusingly similar to trademarks owned by the Complainant. Interestingly, despite its corporate name Steven Madden, Ltd., Complainant apparently does not own any STEVEN MADDEN trademarks, but does own several registration for STEVE MADDEN and also a registration for STEVEN BY STEVE MADDEN. The Panel found that the disputed domain was confusingly similar to both of these marks, emphasizing that “'Steven' is an obvious variation on the spelling of the name 'Steve', which forms part of the Complainant’s [STEVE MADDEN] trademark." Continuing, the Pa...

In a straightforward, old-fashioned typosquatting dispute, Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Vladimir Snezko , WIPO Case No. D2017-2405 (Andrea Jaeger-Lenz, February 2, 2018), the Panel ordered transfer of the domain costoco.com to the wholesale company Costco. Respondent, which had held the disputed domain since 2000, did not respond to the UDRP complaint. Starting with the first of the three factors necessary for a complainant to prevail in a UDRP dispute, namely, whether the disputed domain is identical or confusingly similar to the complainant's trademark, the Panel noted that "[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark." The Panel found that that minor differences between the disputed domain and Complainant's COSTCO trademark did not obviate the visual and phonetic similarities between them, and thus fo...

In Audi AG v. DNS Administrator, Cykon Technology Limited , WIPO Case No. D2017-1012 (William R. Towns, July 14, 2017), the Panel ordered the transfer of xaudi.com to the owner and maker of AUDI branded vehicles. The case involved a domain that Respondent owned since 2008, and despite Respondent's defense, the Panel nevertheless ordered the transfer in what turned out to be a pretty clear cut case. In making its determination, the Panel considered the three factors necessary for a complainant to prevail in a UDRP claim. First, the Panel determined that xaudi.com is confusingly similar to the AUDI mark owned by Complainant, noting that the "inclusion of the preceding letter 'x' does not serve to dispel the confusing similarity of the disputed domain name to the distinctive and well-known AUDI mark." Turning to the second factor, whether Respondent has rights or legitimate interests in the disputed domain, the Panel emphasized that Respondent "has us...

A fancy room at the Sofitel Berlin Schweizerhof Ever try to book a hotel for an INTA annual meeting in the last weeks leading up to the meeting? Yeah, you feel me, right? No way you are scoring a room at a fancy hotel, and if you do find such a room, you are paying the equivalent of several Thomson search reports to get it. Thus, in the spirit of the upcoming INTA annual meeting, I couldn't resist the following case. In ACCOR v. Vista Holdings, Inc. , WIPO Case No. D2008-0291 (Dietrich Beier, April 21, 2008), the Panel required the transfer of accorhoteels.com to the hotel chain owner of the ACCOR mark. The Panel swiftly concluded that accorhoteels.com was confusingly similar to the Complainant's ACCOR mark, that the failed-to-Respond(ent) had no rights or legitimate interests in the domain, and that the disputed domain was registered and used in bad faith. This case was one of those complete knock-outs that you just love to read as a trademark attorney. While the facts, reaso...